Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 15
`Entered: August 17, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`EMERSON ELECTRIC CO.,
`Petitioner,
`
`v.
`
`SIPCO, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01973
`Patent 8,013,732 B2
`_______________
`
`
`
`Before LYNNE E. PETTIGREW, STACEY G. WHITE, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`AMENDED SCHEDULING ORDER
`
`
`Tel: 571-272-7822
`
`Paper 15
`Entered: August 17, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`EMERSON ELECTRIC CO.,
`Petitioner,
`
`v.
`
`SIPCO, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-01973
`Patent 8,013,732 B2
`_______________
`
`
`
`Before LYNNE E. PETTIGREW, STACEY G. WHITE, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`AMENDED SCHEDULING ORDER
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`
`This Order sets a schedule for trial, including due dates for the parties
`to take action upon institution of the trial. See Appendix.
`
`A. INITIAL CONFERENCE
`The Appendix does not specify a date for an initial conference call.
`An initial conference call will be scheduled if either party requests it within
`21 days after entry of this Order. If an initial conference call is scheduled,
`the parties are directed to the Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,765–66 (Aug. 14, 2012) for guidance in preparing for the
`call, and should be prepared to discuss any proposed changes to the schedule
`and any motions the parties anticipate filing during the trial.
`
`B. MEET AND CONFER REQUIREMENT
`The parties are encouraged to engage in meaningful discussion before
`seeking authorization under 37 C.F.R. § 42.20(b) to file a motion for relief
`with the Board. At a minimum, before requesting authorization, the parties
`shall confer with each other in a good-faith effort to resolve the issue for
`which relief is to be sought. Only if the parties cannot resolve the issue on
`their own may a party request a conference call with the Board in order to
`seek authorization to move for relief.1 In any request for a conference call
`with the Board, the requesting party shall: (1) certify that it has in good-
`faith conferred (or attempted to confer) with the other parties in an effort to
`resolve the issue; (2) identify with specificity the issue for which agreement
`has not been reached; (3) state the precise relief to be sought; and
`
`
`1 Patent Owner may file a motion to amend without prior authorization, but
`only after conferring with the Board. 37 C.F.R. § 42.121(a).
`
`2
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`(4) propose specific dates and times at which both parties are available for
`the conference call.
`C. ADR STATEMENT
`
`The parties are encouraged to discuss promptly alternative means for
`resolving their disputes regarding the subject matter of this proceeding. To
`advance the opportunities for early disposition, petitioner is encouraged to
`notify the Board, by the due date identified in the Appendix to this Order,
`that the parties have conferred regarding alternative dispute resolution and
`whether the parties have reached any agreements.
`
`D. DUE DATES
`The Appendix specifies due dates for the parties to take action in this
`trial. The parties may stipulate to different dates for DUE DATES 1 through
`5 (earlier or later, but no later than DUE DATE 6). A notice of any
`stipulation, specifically identifying the changed due dates, must be filed
`promptly with the Board. The parties may not stipulate to an extension of
`DUE DATES 6 and 7.
`In stipulating to different times, the parties should consider the effect
`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-
`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
`evidence and cross-examination testimony (see section E, below).
`The parties are reminded that the Testimony Guidelines appended to
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772
`(Aug. 14, 2012) (Appendix D), apply to this proceeding. The Board may
`impose an appropriate sanction for failure to adhere to the Testimony
`Guidelines. 37 C.F.R. § 42.12. For example, reasonable expenses and
`
`3
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`attorneys’ fees incurred by any party may be levied on a person who
`impedes, delays, or frustrates the fair examination of a witness.
`
`1. DUE DATE 1
`The patent owner may file—
`a.
`A response to the petition (37 C.F.R. § 42.120), and
`b.
`A motion to amend the patent (37 C.F.R. § 42.121).
`The patent owner must file any such response or motion to amend by
`DUE DATE 1. If the patent owner elects not to file anything, the
`patent owner must arrange a conference call with the parties and the
`Board. The patent owner is cautioned that any arguments for
`patentability not raised in the response will be deemed waived.
`
`2. DUE DATE 2
`The petitioner must file any reply to the patent owner’s
`response and opposition to the motion to amend by DUE DATE 2.
`
`3. DUE DATE 3
`The patent owner must file any reply to the petitioner’s
`opposition to patent owner’s motion to amend by DUE DATE 3.
`
`4. DUE DATE 4
`a.
`Each party must file any motion for an observation on the
`cross-examination testimony of a reply witness (see section F, below)
`by DUE DATE 4.
`b.
`Each party must file any motion to exclude evidence (37
`C.F.R § 42.64(c)) and any request for oral argument (37 C.F.R.
`§ 42.70(a)) by DUE DATE 4.
`
`4
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`
`5. DUE DATE 5
`a.
`Each party must file any response to an observation on
`cross-examination testimony by DUE DATE 5.
`b.
`Each party must file any opposition to a motion to
`exclude evidence by DUE DATE 5.
`
`6. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence
`by DUE DATE 6.
`
`7. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`
`E. CROSS-EXAMINATION
`Except as the parties might otherwise agree, for each due date—
`1.
`Cross-examination begins after any supplemental evidence is
`due. 37 C.F.R. § 42.53(d)(2).
`2.
`Cross-examination ends no later than a week before the filing
`date for any paper in which the cross-examination testimony is expected to
`be used. Id.
`
`F. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
`A motion for observation on cross-examination provides the parties
`with a mechanism to draw the Board’s attention to relevant cross-
`examination testimony of a reply witness because no further substantive
`paper is permitted after the reply. See Office Patent Trial Practice Guide, 77
`Fed. Reg. at 48,768. The observation must be a concise statement of the
`
`5
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`IPR2015-01973
`Patent 8,013,732 B2
`
`relevance of precisely identified testimony to a precisely identified argument
`or portion of an exhibit. Each observation should not exceed a single, short
`paragraph. The opposing party may respond to the observation. Any
`response must be equally concise and specific.
`
`G. PATENT OWNER’S MOTION TO AMEND
`
`Pursuant to recent amendments to 37 C.F.R. § 42.24, the following
`page limits apply in this proceeding: a motion to amend, if filed, and
`petitioner’s opposition to the motion to amend, each are limited to twenty-
`five (25) pages; and patent owner’s reply to the opposition to the motion to
`amend is limited to twelve (12) pages. See Amendments to the Rules of
`Practice for Trials Before the Patent Trial and Appeal Board, 80 Fed. Reg.
`28,561, 28,565 (May 19, 2015). The page limit of the motion to amend does
`not include the claim listing set forth in 37 C.F.R. § 42.121(b), which, as
`amended, provides that the claim listing may be contained in an appendix to
`the motion. See 80 Fed. Reg. at 28,566.
`H.
`PETITIONER’S REPLY
`
`Pursuant to a recent amendment to 37 C.F.R. § 42.24(c), petitioner’s
`reply brief to the patent owner’s response to the petition is limited to twenty-
`five (25) pages. See 80 Fed. Reg. at 28,565.
`
`
`
`
`6
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ............................................. Upon Request
`
`ADR STATEMENT DUE ............................................................ May 2, 2016
`
`DUE DATE 1 ............................................................................. May 27, 2016
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .............................................................................. July 28, 2016
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ......................................................................... August 26, 2016
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ................................................................... September 16, 2016
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ................................................................... September 30, 2016
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ......................................................................... October 7, 2016
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ....................................................................... October 28, 2016
`Oral argument (if requested)
`
`
`7
`
`
`
`IPR2015-01973
`Patent 8,013,732 B2
`
`PETITIONER:
`
`Donald L. Jackson
`DAVIDSON BERQUIST JACKSON & GOWDEY, LLP
`djackson@dbjg.com
`
`
`
`PATENT OWNER:
`
`Gregory J. Gonsalves
`GONSALVES LAW FIRM
`gonsalves@gonsalveslawfirm.com
`
`
`8
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